OMC LLC v. S&E Gourmet Cuts, Inc.

Defendant
S&E Gourmet Cuts, Inc. d/b/a “Country Archer”
is a California corporation with its principal place of
business there, while plaintiff OMC LLC is a limited
liability corporation with its principal place of business
here in Wisconsin. In November of 2016, Country Archer sent a
letter to OMC, accusing it of infringing on Country
Archer's copyrights and trade dress related to beef jerky
packaging and warning of commencement of litigation in
California if not resolved outside of court. After further
correspondence was exchanged between the parties, OMC filed
this lawsuit in Wisconsin, seeking a declaratory judgment
against Country Archer on its claims of trade dress and
copyright infringement, as well as for violation of
California unfair competition law.[1] Eleven days later, Country
Archer made good on its original warning by filing a
mirror-image lawsuit in the Central District of California,
affirmatively asserting claims for copyright infringement,
Lanham Act violations and common law unfair competition.

Acknowledging
the general deference given to a plaintiff's choice of
forum, the defendant nevertheless moves to dismiss this
declaratory judgment action because OMC only filed it to
thwart the lawsuit Country Archer had already threatened to
bring against OMC in the Central District of California.
(Dkt. #6.) In the alternative, Country Archer moves to
transfer this case to that court. (Id.) The court
agrees that the facts here demonstrate that plaintiff OMC
filed this case to preempt the imminent threat by defendant
Country Archer to file suit in its home district. Therefore,
plaintiff's claims here will be dismissed.

Both
OMC and Country Archer manufacture and sell beef jerky, among
other products. The latter has sold meat snacks under the
“Country Archer” label since at least 1978. In
2012, Country Archer began marketing and selling beef jerky
with the product packaging design at issue in this case.
(Decl. of Thomas J. Speiss, III Ex. 1 [hereinafter
“Cease and Desist Letter”] (dkt. #8-1) at 1.) In
2016, OMC began selling its “Mighty” brand of
beef jerky in packaging that Country Archer claims to have
been copied from its own design. (Compl. (dkt. #1) ¶ 6.)

On
November 22, 2016, Country Archer's counsel, Thomas J.
Speiss, III, sent OMC's counsel, Christopher Hussin, a
letter accusing OMC of using packaging for its
“Mighty” beef jerky that “subject[ed] it to
claims under United States law for copyright infringement,
trade dress infringement and unfair competition.”
(Cease and Desist Letter (dkt. #8-1) at 4.) Based on those
accusations, Country Archer “respectfully
request[ed]” that OMC: (1) “Modify its new . . .
white-and-black logo to a different color scheme”; and
(2) “Modify its product packaging to change or
eliminate design elements” discussed elsewhere in the
letter. (Id. at 6.) Speiss concluded his letter with
the following paragraphs:

As part of its request, Country Archer will offer [OMC] a
reasonable period of time to modify its present trademarks
and sell through its present inventory of products that are
marketed and sold in the confusingly similar packaging.
Please contact me on or before Tuesday, December 13,
2016 to advise me as to [OMC]'s intentions.

Unless a settlement is reached by December 13, 2016,
Country Archer will file suit against [OMC] in the Central
District of California for copyright infringement and other
claims. Such conduct, if proven, would entitle Country Archer
to legal relief against [OMC] as well as its owners, officers
and directors, which could include actual damages, realized
profits, statutory damages up to $150, 000, Country
Archer's attorney fees and costs, as well as appropriate
injunctive relief.

(Id. (emphasis in original).)

By
email that same day, Hussin's legal assistant notified
Speiss that he would be out of the office until November 30,
2016, but would respond upon his return. (Decl. of Thomas J.
Speiss, III Ex. 2 (dkt. #8-2).) On December 13, 2016, the
actual deadline for settlement established in Speiss's
original letter, OMC's Hussin finally responsed by email
to Speiss, explaining that:

As you know, I was away from the office for a number of days
when you sent the initial demand letter. Due to my absence,
and a client contact illness, we are not in a position to
respond to your initial demand letter by today. We do,
however, expect to respond in the next day or so.

We trust this will be acceptable to your client.

(Decl. of Thomas J. Speiss, III Ex. 3 (dkt. #8-3).) That same
day, Speiss responded by email, offering Friday, December 16,
as an acceptable, response date. (Decl. of Thomas J. Speiss,
III Ex. 4 (dkt. #8-4).) The following day, December 14,
Hussin again replied by email, stating that “I am
waiting for confirmation from the client, but I believe you
should have the response by Friday at the latest.”
(Id.)

On
December 16, 2016, OMC sent a letter through its counsel
addressing Country Archer's infringement and unfair
competition allegations. (Decl. of Thomas J. Speiss, III Ex.
5 (dkt. #8-5).) In that letter, Hussin outlined OMC's
reasons for concluding that Country Archer's contentions
lacked legal merit. Notably, that same day (in fact, mere
minutes before sending the letter response by email), OMC
filed its complaint for declaratory judgment without
notifying Country Archer that it had done so, or even was
intending to do so, unless one counted an ambiguous warning
in the letter that ...

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